Ex Parte Nardacci

Board of Patent Appeals and Interferences

Jan 22, 2009

10638535 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NICHOLAS M. NARDACCI
__________

Appeal 2008-3968
Application 10/638,535
Technology Center 3700
__________

Decided: January 22, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a golf
ball. The Examiner has rejected the claims as obvious and/or not being
supported by an adequate written description. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

1 Oral Hearing held January 13, 2009.
Appeal 2008-3968
Application 10/638,535

STATEMENT OF THE CASE
Claims 1-34, 48, and 50 are pending and on appeal. We will focus on
claim 1, which reads as follows:
1. A golf ball, comprising:
a core;
a cover disposed over the core, the cover having a surface containing
a plurality of locations;
dimples disposed on said surface at various of said locations; and
protrusions disposed on said surface at various of said locations and
occupying approximately 25% or less of said surface;
wherein said dimples and said protrusions occupy different spatial
positions on said surface.
Claims 1-30, 48, and 50 stand rejected under 35 U.S.C. § 112, first
paragraph, “as failing to comply with the written description requirement”
(Ans. 4).
Claims 1, 2, 9, 15-34, 48, and 50 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Shimosaka (U.S. Patent No. 6,179,731 B1, Jan. 30,
2001) (Ans. 4).
Claims 3-8 and 10-14 stand rejected under 35 U.S.C. § 103(a) as
obvious over Shimosaka in view of Aoyama (U.S. Patent No. 5,957,786,
Sep. 28, 1999) (Ans. 7).
WRITTEN DESCRIPTION
The Examiner finds that the “Specification does not contain a written
description of the protrusions occupying the ball surface of . . . 25% or less”
(Ans. 4).
Issue
Did the Examiner err in finding that the Specification does not support
protrusions occupying approximately 25% or less of the surface?
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Application 10/638,535

Findings of Fact
1. The Specification discloses a golf ball having “dimples and
protrusions occupy[ing] different spatial positions on the surface” (Spec. 4:
4-9).
2. The Specification also states that the “protrusions and dimples
preferably cover greater than approximately 75% of the outer surface. More
preferably, the protrusions and said dimples cover greater than
approximately 80% of the surface. Most preferably, the protrusions and
dimples cover greater than approximately 85% of the surface.” (Id. at 5: 4-
7.)
3. In addition, the Specification states that the “ratio of protrusion
coverage area to total dimple and protrusion coverage area is from
approximately 0.01 to approximately 0.30. The ratio is more preferably
from approximately 0.01 to approximately 0.20. The ratio is most
preferably from approximately 0.01 to approximately 0.10.” (Id. at 5: 13-
16.)
4. Where the protrusions and dimples cover, for example, 85% of
the outer surface, a ratio of protrusion coverage area to total dimple and
protrusion coverage area of from 0.01 to 0.3 provides a protrusion coverage
area of from 0.85 to 25.5%.
5. The Specification also states that the “dimples preferably cover
at least approximately 75% of the surface. More preferably, the dimples
cover at least approximately 80% of the surface. Most preferably, the
dimples cover at least approximately 85% of the surface.” (Id. at 6: 4-6.)
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Application 10/638,535

6. Given that “dimples and protrusions occupy different spatial
positions on the surface” (Finding of Fact (FF) 1), where the dimples cover
at least approximately 75% of the surface, the protrusions clearly cannot
cover more than approximately 25% of the surface.
Principles of Law
“In order to satisfy the written description requirement, the disclosure
as originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure must convey
with reasonable clarity to those skilled in the art that the inventor was in
possession of the invention. See id. With regard to ranges, the “question is
whether, on the facts, the PTO has presented sufficient reason to doubt that
[a] broader described range also describes [a] somewhat narrower claimed
range.” In re Wertheim, 541 F.2d 257, 264 (CCPA 1976).
Analysis
The Specification states that the “dimples preferably cover at least
approximately 75% of the surface” (FF 5). The Specification also states that
the “dimples and protrusions occupy different spatial positions on the
surface” (FF 1). Thus, where the dimples cover at least approximately 75%
of the surface, the protrusions clearly cannot cover more than approximately
25% of the surface (FF 6).
In addition, the Specification states that the protrusions and dimples
preferably cover greater than approximately 75%, more preferably greater
than approximately 80%, and most preferably greater than approximately
85%, of the outer surface and that the “ratio of protrusion coverage area to
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total dimple and protrusion coverage area is from approximately 0.01 to
approximately 0.30” (FF 2-3). Where the protrusions and dimples cover, for
example, 85% of the outer surface, which is clearly within Appellant’s
disclosure (FF 2), a ratio of protrusion coverage area to total dimple and
protrusion coverage area of from 0.01 to 0.3 provides a protrusion coverage
area of from 0.85 to 25.5% (FF 4).
Based on these disclosures, we agree with Appellant that the
Specification provides sufficient support to claim protrusions occupying
approximately 25% or less of the surface.
The Examiner argues, however, that the “only way that the golf ball
can have 75% dimples and 25% protrusions covering the entire golf ball is if
100% of the golf ball surface is covered by dimples and protrusions, which
would leave no land areas exposed,” but that “there is no support that all of
the land area is occupied by protrusions” (Ans. 9). We are not persuaded.
First, as noted above, where the dimples cover at least approximately
75% of the surface, the protrusions clearly cannot cover more than
approximately 25% of the surface (FF 6). Thus, we agree that Appellant
was in possession of the concept of golf balls having protrusions occupying
less than approximately 25% of the surface. With regard to claiming
protrusions occupying approximately 25% of the surface, we note that the
Specification does not require that dimples cover at least approximately 75%
of the surface. Instead, this is a preferred embodiment (FF 5). In addition,
the Specification does not require any particular amount of land area not
occupied with protrusions or dimples (App. Br. 12). Furthermore, the
Examiner’s argument does not adequately address the teaching in the
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Specification that the “ratio of protrusion coverage area to total dimple and
protrusion coverage area is from approximately 0.01 to approximately 0.30,”
which, at a protrusion and dimple coverage of 85%, provides a protrusion
coverage area of from 0.85 to 25.5% (FF 2-4).
Conclusion
The Examiner erred in finding that the Specification does not support
protrusions occupying approximately 25% or less of the surface. We
therefore reverse the rejection of claims 1-30, 48, and 50 under 35 U.S.C.
§ 112, first paragraph.
OBVIOUSNESS
The Examiner finds that Shimosaka “discloses a golf ball having a
core and cover wherein the cover has protrusions . . . and dimples occupying
different positions on the cover,” where the “protrusions occupy about 30 to
90% of the surface” (Ans. 4-5). The Examiner finds that “the term ‘about’
allows for the protrusion percentage to be slightly less than 30%” (id. at 5).
Appellant contends that “Shimosaka expressly states that a protrusion
coverage of less than 30% would result in an undesirable, inconsistently
performing golf ball” (App. Br. 13). Thus, Appellant argues that the
“modification proffered by the Examiner is in direct contrast to the explicit
teaching of Shimosaka, destroys the intended purpose of the Shimosaka golf
ball, and changes the principle of operation of the Shimosaka golf ball” (id.).
Issue
Did the Examiner err in concluding that Shimosaka teaches or
suggests a golf ball having protrusions occupying approximately 25% or less
of its surface?
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Application 10/638,535

Findings of Fact
7. Shimosaka discloses a golf ball having raised projections and
recessed dimples (Shimosaka, col. 1, ll. 46-50).
8. Shimosaka also discloses that “the raised projections preferably
account for at least about 30% of the surface area of [an] imaginary circle”
traced on the spherical surface (id. at col. 1, ll. 51-53).
9. In addition, Shimosaka discloses that, “[i]f the raised
projections occupy less than about 30% of the imaginary circle, the ball
would be hit at a largely varying launch angle, spin rate and initial velocity”
(id. at col. 3, ll. 3-6).
10. Shimosaka also discloses that the raised projections “preferably
have a total projected surface area that accounts for 30 to 90% of the overall
surface area of the golf ball” (id. at col. 1, ll. 53-58).
11. In addition, Shimosaka discloses that, “[i]f the total projected
surface area is less than 30%, the ball would be hit at a largely varying
launch angle, spin rate, and initial velocity” (id. at col. 3, ll. 33-35).
Principles of Law
Under 35 U.S.C. § 103, “the scope and content of the prior art are to
be determined; differences between the prior art and the claims at issue are
to be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject
matter is determined.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden
is met, does the burden of coming forward with evidence or argument shift
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Application 10/638,535

to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993)
(citation omitted).
Analysis
Shimosaka discloses that “the raised projections preferably account
for at least about 30% of the surface area of [an] imaginary circle” traced on
the spherical surface and that the raised projections “preferably have a total
projected surface area that accounts for 30 to 90% of the overall surface area
of the golf ball” (FF 8 & 10). In addition, Shimosaka discloses that, “[i]f the
raised projections occupy less than about 30% of the imaginary circle” and
“[i]f the total projected surface area is less than 30%, the ball would be hit at
a largely varying launch angle, spin rate, and initial velocity” (FF 9 & 11).
Thus, we agree with Appellant that Shimosaka does not suggest a golf ball
having protrusions occupying approximately 25% or less of the surface.
The Examiner argues, however, that Appellant “does not disclose why
any occupancy of the protrusion less than 25% is critical in order to attain
the invention” (Ans. 5). However, as noted by Appellant (App. Br. 13), it is
initially the Examiner’s burden to set forth a prima facie case of
obviousness. In this case, we agree that the Examiner has not done so.
Conclusion
The Examiner erred in concluding that Shimosaka teaches or suggests
a golf ball having protrusions occupying approximately 25% or less of its
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Application 10/638,535

surface. We therefore reverse the obviousness rejection of 1, 2, 9, 15-34, 48,
and 50.2
Claims 3-8 and 10-14 depend from claim 1. The Examiner relies on
Aoyama for limitations recited in dependent claims, and has not pointed to
any disclosure in Aoyama that would make up for the deficiencies discussed
above (Ans. 7-8). We therefore also reverse the obviousness rejection of
these claims.
ORDER
We reverse the rejections under both 35 U.S.C. § 112, first paragraph,
and § 103(a).

REVERSED

cdc

HANIFY & KING PROFESSIONAL CORPORATION
1875 K STREET, NW
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2 Claims 31-33 do not recite that protrusions occupy approximately 25% or
less of the surface. However, claims 31-33 require that dimples cover at
least approximately 75% of the surface. Thus, protrusions cannot occupy
more than approximately 25% of the surface in claims 31-33.
9